Redskins_FedexThe en banc U.S. Court of Appeals for the Federal Circuit (“CAFC”) has struck down a provision of the Lanham Act that denies registration for “disparaging” trademarks.

On December 22, 2015, the CAFC ruled in an appeal by Simon Shiao Tam, who wants to trademark the name of his Asian-American rock band, the Slants.  The CAFC Opinion can be found here (PDF). The court found the ban on disparaging trademarks amounts to viewpoint discrimination that violates the First Amendment.  The decision is important, for among other reasons, an appeal by the Washington Redskins (“Washington”) is pending.  Last year, the US Patent and Trademark Office (USPTO) cancelled six US Trademark registrations for the mark REDSKINS. because the USPTO found its mark is disparaging to Native Americans. The Washington’s appeal is now pending before the 4th U.S. Circuit Court of Appeals in Richmond, Virginia.  Washington had appealed the USPTO decision to the US Federal District Court for the Eastern District of Virginia, where the Federal District Court affirmed the USPTO decision.  In the 70 page opinion, found here (PDF),  the Court noted that the cancellation does not prevent Washington from using the mark REDSKINS, but it does withhold the federal benefits of Federal Trademark Registration.  Such benefits include, a presumption that the registrant is the exclusive owner of the mark, and after five years of registration, the mark is incontestable.

If the decision of the Court of Appeals in Virginia conflicts with the decision of the CAFC, the issue could become ripe to be heard by the US Supreme Court.

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